Composers and Authors Society of Singapore Ltd v Fox Networks Group Singapore Pte Ltd

• Judge: Dedar Singh Gill J
• Judgment Date: 26 October 2021
• Court: High Court (Singapore)
• Docket Number: Suit No 927 of 2020 (Summonses Nos 5628 and 5684 of 2020)

Composers and Authors Society of Singapore Ltd

and

Fox Networks Group Singapore Pte Ltd

[2021] SGHC 241

Dedar Singh Gill J

Suit No 927 of 2020 (Summonses Nos 5628 and 5684 of 2020)

General Division of the High Court

Intellectual Property — Copyright — Infringement — Exclusive right to communicate work to the public in s 26(1)(a)(iv) Copyright Act (Cap 63, 2006 Rev Ed) — Test for determining whether work was communicated to the “public” — Whether persons outside of Singapore form part of the “public” — Section 26(1)(a)(iv) Copyright Act (Cap 63, 2006 Rev Ed)

Intellectual Property — Copyright — Infringement — Standing to sue — Distinction between exclusive right to authorise person to do act in relation to copyright work and exclusive right to do that act

Intellectual Property — Copyright — Subject matter — Broadcasts — Whether point-to-point transmissions fell within meaning of “broadcast” under Copyright Act (Cap 63, 2006 Rev Ed) — Copyright Act (Cap 63, 2006 Rev Ed)

Held, allowing SUM 5628 in part and dismissing the remainder of the claims in SUM 5684:

The claims for primary infringement

The Standing Issue

(1) The plaintiff was not the exclusive licensee of the right to communicate the Disputed Musical Works to the public or to perform these works in public. Thus, it lacked standing to bring the claims for primary infringement: at [40].

(2) Under the Disputed Reciprocal Agreements, the plaintiff was only the exclusive licensee of the right to authorise the doing of acts in relation to the Disputed Musical Works (“the Right of Authorisation”): at [36].

(3) As s 9(2) of the Copyright Act referred separately to “the exclusive right to do an act in relation to a work” and “the exclusive right to authorise a person to do that act”, this signalled that the two rights were distinct. Although all Underlying Rights were accompanied by a corresponding Right of Authorisation, the two could be severed such as by way of an assignment or exclusive licence: at [29] and [30].

(4) Further, being the owner or exclusive licensee of the Right of Authorisation did not necessarily imply the same over the Underlying Right. Section 25(1) of the Copyright Act made clear that a partial assignment of exclusive rights only transferred ownership of the exclusive rights which were the subject of the assignment. In keeping with the spirit of s 25(1) of the Copyright Act, rights obtained under an exclusive licence were confined to the exclusive rights which were the subject matter of the exclusive licence: at [38].

The Communication Issue

(5) The defendant's satellite uplinking fell within the meaning of a point-to-point (“PTP”) transmission. In PTP transmissions, one broadcaster transmitted signals to a satellite, which were then transmitted to another broadcaster who included the signals in its own transmissions. Indeed, in this case, the Encrypted Channels uplinked by the defendant were only downlinked to the Distributors. The Distributors were then responsible for transmitting the defendant's channel(s) to their own subscribers: at [42] and [43].

(6) The Disputed Musical Works had not been communicated to the public under s 26(1)(a)(iv) of the Copyright Act. There were three main planks to the court's reasoning: at [108].

(7) First, uplinking signals to a satellite in the context of PTP transmissions did not constitute a broadcast. This was because a broadcast had to objectively involve direct transmission to the general public or a part thereof: at [54].

(8) Section 16(5)(b) of the Copyright Act stipulated the means for identifying who made a television or sound broadcast by “the technique known as direct broadcasting by satellite”, but not PTP transmissions. This suggested that Parliament did not consider PTP transmissions to be broadcasts under the Copyright Act. Further, Singapore had adopted s 16(5) from the Copyright Act 1956 (c 74) (UK) (“Copyright Act 1956 (UK)”), as amended by the Cable and Broadcasting Act 1984 (c 46) (UK). What was significant was that the UK Parliament had deliberately opted not to expand the definition of “broadcasting” in the Copyright Act 1956 (UK) to include PTP transmissions. Therefore, the UK's intention to exclude PTP transmissions from the ambit of “broadcasting” was likely also imported into Singapore's Copyright Act: at [58], [62] and [64].

(9) Because the pleaded claim only accused the defendant of uplinking PTP transmissions, the Disputed Musical Works were not being broadcast by the defendant: at [76].

(10) Second, the defendant had not made the Disputed Musical Works available for access by any person from a place and at a time chosen by that person within the meaning of s 7(1) of the Copyright Act. This was because only the Distributors were provided with a device to decode the defendant's encrypted transmissions: at [82].

(11) Third, even if the works had been communicated, they were not communicated to the “public” within the meaning of s 26(1)(a)(iv) of the Copyright Act: at [99].

(12) The question of whether a communication had been made to the public was a multi-factorial inquiry. One factor was the number of persons to whom the work was communicated. Another factor was whether recipients of the communication were persons from whom the copyright owner was entitled to expect payment for the work's authorised communication. If so, it weighed in favour of the communication having been made to the public: at [85] and [86].

(13) The defendant performed its uplinking activities in a commercial setting. However, the commercial nature of the uplinked transmissions was outweighed by the fact that only two recipients in Singapore were able to decrypt them (ie, Singtel and Starhub). This number was too small to amount to a communication to the public: at [87], [95] and [98].

(14) Further, Distributors outside of Singapore who received the defendant's transmissions were irrelevant for the purpose of determining if a communication had been made to the public. In the absence of express language in s 26(1)(a), the word “public” did not have an extraterritorial reach: at [103] and [107].

Conclusion

(15) Both questions in the O 14 r 12 ROC application were resolved against the plaintiff. Therefore, the plaintiff's claims for primary infringement were dismissed: at [109].

The claim for authorisation liability

(16) Since the questions submitted for summary determination under O 14 r 12 of the ROC did not relate to authorisation liability, this portion of the claim was examined under O 18 r 19 of the ROC: at [111].

(17) The claim for authorisation liability was struck out under O 18 r 19(1)(b) for being legally unsustainable: at [113].

(18) To establish authorisation of an infringing act, there first had to be proof that an infringing act had taken place within Singapore. However, the plaintiff did not even plead that the Distributors, particularly Singtel and Starhub, committed primary infringement. Therefore, even if the plaintiff succeeded in proving all the pleaded facts, the defendant could not be liable for authorising an act of infringement when the latter did not exist in the pleadings: at [113] and [114].

Case(s) referred to

AG v Ting Choon Meng [2017] 1 SLR 373 (folld)

Australasian Performing Right Association Ltd v Telstra Corp Ltd (1995) 31 IPR 289 (refd)

Bunga Melati 5, The [2012] 4 SLR 546 (folld)

Chem Orchid, The [2016] 2 SLR 50 (folld)

ITV Broadcasting Ltd v TVCatchup Ltd Case C-607/11, EU:C:2013:147 (refd)

Lance Court Furnishings Pte Ltd v PP [1993] 3 SLR(R) 103; [1993] 3 SLR 969 (folld)

PCCW Media Ltd v M1 Ltd [2018] 5 SLR 375 (folld)

PP v Lam Leng Hung [2018] 1 SLR 659 (folld)

RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd [2011] 1 SLR 830 (refd)

Reha Training Gesellschaft für Sport- und Unfallrehabilitation mbH v Gesellschaft für musikalische Aufführungs- und mechanische Vervielfältigungsrechte eV (GEMA) Case C-117/15, EU:C:2016:379 (refd)

Samsonite IP Holdings Sarl v An Sheng Trading Pte Ltd [2017] 4 SLR 99 (refd)

SBS Belgium NV v SABAM Case C-325/14, ECLI:EU:C:2015:764 (refd)

Sociedad General de Autores y Editores de Espana (SGAE) v Rafael Hoteles SL Case C-306/05, EU:C:2006:764 (refd)

Tan Cheng Bock v AG [2017] 2 SLR 850 (folld)

Telstra Corp Ltd v Australasian Performing Right Association Ltd (1997) 146 ALR 649 (refd)

TMT Asia Ltd v BHP Billiton Marketing AG (Singapore Branch) [2015] 2 SLR 540 (folld)

Total English Learning Global Pte Ltd v Kids Counsel Pte Ltd [2013] SGHCR 22 (distd)

Tsai Jean v Har Mee Lee [2009] 2 SLR(R) 1; [2009] 2 SLR 1 (refd)

TuneIn Inc v Warner Music UK Ltd [2021] EWCA Civ 441 (refd)

University of New South Wales v Moorhouse and Angus & Robertson (Publishers) Pty Ltd (1975) 133 CLR 1 (refd)

WEA International Inc v Hanimex Corp Ltd (1987) 77 ALR 456 (refd)

Facts

The plaintiff pleaded that it was a collecting society which administered the rights of public performance, broadcast, diffusion and reproduction in “music and musical associated literary works” on behalf of its members. Under reciprocal agreements with affiliated societies in other countries, the plaintiff claimed to represent owners of musical works in both international and local repertoires. The defendant was a regional broadcasting company based and operating in Singapore. It programmed, operated and provided to its authorised, independent content distributors (“Distributors”) subscription pay television channels in an encrypted format (“the Encrypted Channels”), accessible only by the Distributors. There were only two Distributors located in Singapore – Singtel and Starhub. Only one Encrypted Channel was transmitted by the defendant via satellite to the Distributors in Singapore – Fox Sports 3. The remaining Distributors were located outside of Singapore. The Distributors owned, operated, and managed their own television platforms. Members of the public in the country the Distributor operated in were able to subscribe to these television...